Facts

This case revolves around a patent application made by UPL Limited seeking rights over a specific fungicidal combination, which, according to the company, shows unexpected benefits such as a reduction in fungal diseases, delayed ageing in crops, and improved yield.

The invention proposed the combination of various categories of fungicides—specifically a succinate dehydrogenase inhibitor (SDHI), a dithiocarbamate fungicide, and another fungicide from either the ergosterol biosynthesis inhibitor or quinone outside inhibitor family.

UPL filed a provisional specification on 4 November 2016 and followed up with a complete specification and request for examination on 1 November 2017 under Patent Application No. 201631037704. The First Examination Report (FER) was issued by the authorities, after which UPL responded to the objections. However, a pre-grant opposition was filed by another party, and UPL had to submit replies and evidence.

The core benefit claimed for the patent was the synergy created by combining different classes of fungicides, which, according to the applicant, resulted in superior technical performance on crops.

Procedural Details

The patent application went through several procedural stages. After UPL filed its original application and the subsequent complete specification, the Patent Office issued a First Examination Report in April 2019. UPL responded, clarifying and defending its claims.

In July 2020, a pre-grant opposition was filed under Section 25(1) of the Patents Act, alleging lack of novelty, lack of inventive step, and that the invention was merely a non-patentable admixture. Both oral and written submissions were made by UPL and the opposing party. The hearing on the opposition was held in May 2023, and both sides subsequently filed written submissions.

On 3 November 2023, the Controller of Patents issued an order rejecting UPL’s patent application. UPL challenged this order in the High Court, arguing that the decision violated the principles of natural justice—primarily because the Controller neither considered expert evidence submitted by UPL nor afforded separate hearings for the application and the opposition as mandated by law. The challenge was filed as a writ petition under Article 226 of the Constitution rather than by way of statutory appeal.

Dispute

The main dispute in the case centers around the following issues:

• Whether the patent application was rejected validly on the ground that it lacked novelty and inventive step and constituted a mere admixture.
• Whether the procedure adopted during the hearing of the pre-grant opposition, including the consideration of evidence and the conduct of hearings, adhered to the principles of natural justice.
• Whether the writ petition before the High Court was maintainable, considering the existence of an alternative statutory remedy.

UPL argued that the Controller ignored material evidence, especially expert affidavits demonstrating technical advancement and synergy of the combination. UPL further contended that the Controller, in the final order, relied on his own technical analysis and data that were not shared with the parties, violating the right to a fair hearing. Additionally, UPL claimed that the legal requirement of holding separate hearings for the application (under Sections 14 and 15) and the opposition (under Section 25(1)) was disregarded, further infringing procedural rights.

The respondents (Union of India and opposing party) maintained that mere non-acceptance of expert evidence did not vitiate the order and argued that the High Court should not intervene since a statutory appeal remedy was available. They also defended the Controller’s findings regarding the lack of novelty and inventive step, asserting the invention did not demonstrate any real synergy beyond what was expected from the mixture of known fungicides.

Detailed Reasoning and Legal Discussion

The High Court, presided by Justice Ravi Krishan Kapur, began by addressing the maintainability issue. The respondents argued that the writ petition should be dismissed since UPL had an alternative statutory remedy—namely, an appeal under the Patents Act. However, the Court noted established principles from key judgments—Whirlpool Corporation v. Registrar of Trade Marks (1998) 8 SCC 1, Harbanslal Sahnia v. Indian Oil Corporation Ltd. (2003) 2 SCC 107, and Radha Krishan Industries v. State of H.P (2021) 6 SCC 771—that although alternative remedies exist, writ jurisdiction under Article 226 can still be invoked in cases where there is a violation of natural justice, lack of jurisdiction, or where fundamental rights are affected.

Referring to these precedents, the Court explained that the principle of “alternative remedy” is not absolute and serves more as a rule of prudence and convenience. The Court is empowered to intervene where procedural or substantive natural justice is denied, or when statutory procedures are ignored.

The Court then proceeded to examine the substantive legality of the proceedings before the Controller. A key legal issue was the proper application of Section 25(1) of the Patents Act (pre-grant opposition), Sections 14 and 15 (examination of applications), and Rule 55(5) of the Patent Rules. The Court highlighted that under law, pre-grant opposition and the application review are two separate processes. Legal precedent requires them to be conducted distinctly so that the applicant receives fair opportunity to respond to objections regarding their patent application as well as specific oppositions raised by opponents.

Justice Kapur observed that, in the present case, the expert affidavit and technical evidence submitted by UPL were not addressed or even recognized in the impugned order. Instead, the Controller conducted an independent technical analysis and drew conclusions without disclosing the basis to UPL or inviting submissions in response. This, in the Court’s view, violated the core principles of natural justice, especially the right to a fair hearing and to respond to the evidence against one’s case. The authorities also failed to grant UPL separate hearings as required under the Act and Rules.

The Court further pointed out that, as elaborated in the Supreme Court’s judgment in Oyster Point Pharma Inc v. Controller of Patents and Designs, 2023 SCC Online Cal 1214 and AstraZeneca v. Intas Pharmaceutical Ltd., 2020 SCC Online Del 2765, the law recognizes the possibility to submit additional evidence to demonstrate technical advancement, even after the initial application. Therefore, the argument that expert evidence could not be considered was found unsustainable.

On the merits, the Court declined to express any views on the substantive patentability or validity of UPL’s invention. Instead, it restricted its analysis to procedural fairness. The Court noted that since technical material evidence had been disregarded and the required procedural safeguards not followed, the order under challenge was unsustainable.

Decision

The High Court set aside the order of the Controller dated 3 November 2023. The matter was remanded for fresh consideration by a different Hearing Officer who must:

• Hold separate hearings under Sections 14 and 25;
• Consider all evidence, including the expert affidavit;
• Pass reasoned orders on both the application and pre-grant opposition as required by law.

The Court expressly clarified that there had been no adjudication on the merits—every issue was left open for fresh consideration and decision.

Facts

This case revolves around a patent application made by UPL Limited seeking rights over a specific fungicidal combination, which, according to the company, shows unexpected benefits such as a reduction in fungal diseases, delayed ageing in crops, and improved yield.

The invention proposed the combination of various categories of fungicides—specifically a succinate dehydrogenase inhibitor (SDHI), a dithiocarbamate fungicide, and another fungicide from either the ergosterol biosynthesis inhibitor or quinone outside inhibitor family.

UPL filed a provisional specification on 4 November 2016 and followed up with a complete specification and request for examination on 1 November 2017 under Patent Application No. 201631037704. The First Examination Report (FER) was issued by the authorities, after which UPL responded to the objections. However, a pre-grant opposition was filed by another party, and UPL had to submit replies and evidence.

The core benefit claimed for the patent was the synergy created by combining different classes of fungicides, which, according to the applicant, resulted in superior technical performance on crops.

Procedural Details

The patent application went through several procedural stages. After UPL filed its original application and the subsequent complete specification, the Patent Office issued a First Examination Report in April 2019. UPL responded, clarifying and defending its claims.

In July 2020, a pre-grant opposition was filed under Section 25(1) of the Patents Act, alleging lack of novelty, lack of inventive step, and that the invention was merely a non-patentable admixture. Both oral and written submissions were made by UPL and the opposing party. The hearing on the opposition was held in May 2023, and both sides subsequently filed written submissions.

On 3 November 2023, the Controller of Patents issued an order rejecting UPL’s patent application. UPL challenged this order in the High Court, arguing that the decision violated the principles of natural justice—primarily because the Controller neither considered expert evidence submitted by UPL nor afforded separate hearings for the application and the opposition as mandated by law. The challenge was filed as a writ petition under Article 226 of the Constitution rather than by way of statutory appeal.

Dispute

The main dispute in the case centers around the following issues:

• Whether the patent application was rejected validly on the ground that it lacked novelty and inventive step and constituted a mere admixture.
• Whether the procedure adopted during the hearing of the pre-grant opposition, including the consideration of evidence and the conduct of hearings, adhered to the principles of natural justice.
• Whether the writ petition before the High Court was maintainable, considering the existence of an alternative statutory remedy.

UPL argued that the Controller ignored material evidence, especially expert affidavits demonstrating technical advancement and synergy of the combination. UPL further contended that the Controller, in the final order, relied on his own technical analysis and data that were not shared with the parties, violating the right to a fair hearing. Additionally, UPL claimed that the legal requirement of holding separate hearings for the application (under Sections 14 and 15) and the opposition (under Section 25(1)) was disregarded, further infringing procedural rights.

The respondents (Union of India and opposing party) maintained that mere non-acceptance of expert evidence did not vitiate the order and argued that the High Court should not intervene since a statutory appeal remedy was available. They also defended the Controller’s findings regarding the lack of novelty and inventive step, asserting the invention did not demonstrate any real synergy beyond what was expected from the mixture of known fungicides.

Detailed Reasoning and Legal Discussion

The High Court, presided by Justice Ravi Krishan Kapur, began by addressing the maintainability issue. The respondents argued that the writ petition should be dismissed since UPL had an alternative statutory remedy—namely, an appeal under the Patents Act. However, the Court noted established principles from key judgments—Whirlpool Corporation v. Registrar of Trade Marks (1998) 8 SCC 1, Harbanslal Sahnia v. Indian Oil Corporation Ltd. (2003) 2 SCC 107, and Radha Krishan Industries v. State of H.P (2021) 6 SCC 771—that although alternative remedies exist, writ jurisdiction under Article 226 can still be invoked in cases where there is a violation of natural justice, lack of jurisdiction, or where fundamental rights are affected.

Referring to these precedents, the Court explained that the principle of “alternative remedy” is not absolute and serves more as a rule of prudence and convenience. The Court is empowered to intervene where procedural or substantive natural justice is denied, or when statutory procedures are ignored.

The Court then proceeded to examine the substantive legality of the proceedings before the Controller. A key legal issue was the proper application of Section 25(1) of the Patents Act (pre-grant opposition), Sections 14 and 15 (examination of applications), and Rule 55(5) of the Patent Rules. The Court highlighted that under law, pre-grant opposition and the application review are two separate processes. Legal precedent requires them to be conducted distinctly so that the applicant receives fair opportunity to respond to objections regarding their patent application as well as specific oppositions raised by opponents.

Justice Kapur observed that, in the present case, the expert affidavit and technical evidence submitted by UPL were not addressed or even recognized in the impugned order. Instead, the Controller conducted an independent technical analysis and drew conclusions without disclosing the basis to UPL or inviting submissions in response. This, in the Court’s view, violated the core principles of natural justice, especially the right to a fair hearing and to respond to the evidence against one’s case. The authorities also failed to grant UPL separate hearings as required under the Act and Rules.

The Court further pointed out that, as elaborated in the Supreme Court’s judgment in Oyster Point Pharma Inc v. Controller of Patents and Designs, 2023 SCC Online Cal 1214 and AstraZeneca v. Intas Pharmaceutical Ltd., 2020 SCC Online Del 2765, the law recognizes the possibility to submit additional evidence to demonstrate technical advancement, even after the initial application. Therefore, the argument that expert evidence could not be considered was found unsustainable.

On the merits, the Court declined to express any views on the substantive patentability or validity of UPL’s invention. Instead, it restricted its analysis to procedural fairness. The Court noted that since technical material evidence had been disregarded and the required procedural safeguards not followed, the order under challenge was unsustainable.

Decision

The High Court set aside the order of the Controller dated 3 November 2023. The matter was remanded for fresh consideration by a different Hearing Officer who must:

• Hold separate hearings under Sections 14 and 25;
• Consider all evidence, including the expert affidavit;
• Pass reasoned orders on both the application and pre-grant opposition as required by law.

The Court expressly clarified that there had been no adjudication on the merits—every issue was left open for fresh consideration and decision.